January 8, 2016

It is Obvious to Vary Result-Effective Variables

By Bryan K. Wheelock, Principal

In In re Urbanski, [2015-1272] (Fed. Cir. 2016), the Federal Circuit affirmed the PTAB’s affirmance of the rejection on obviousness grounds of claims to a method for making an enzymatic hydrolysate of a soy fiber.

The Federal Circuit agreed with the Board that Gross and Wong related to methods of enzymatic hydrolysis of dietary fibers, are readily combinable, and that they recognize that reaction time and degree of hydrolysis are result-effective variables that can be varied in order to adjust the properties of the hydrolyzed fiber in a predictable manner.  The Federal Circuit found that substantial evidence thus supports the Board’s finding that a person of ordinary skill would have expected that, by adjusting the reaction time, the degree of hydrolysis and the properties of the fiber would be altered.

The Federal Circuit said that the prima facie case had not been rebutted.  There was no evidence that the claimed ranges of degree of hydrolysis, water holding capacity, and free simple sugar content are “critical” or “produce a new and unexpected result” as compared to the prior art.  The Federal Circuit also noted that there is also no evidence that the “variables interacted in an unpredictable or unexpected way,” which could render the claims nonobvious.

Urbanski argued that modifying the Gross process by shortening the hydrolysis time, as taught by Wong would make the Gross process inoperative for its intended purpose.  The Federal Circuit recognized that teaching away is applicable to cases involving mechanical devices or apparatus claims, but that on the record before it, the Board properly found that one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong, even at the expense of foregoing the benefit taught by Gross.  Nothing in the prior art teaches that the proposed modification would have resulted in an “inoperable” process or a dietary fiber product with undesirable properties.

The Federal Circuit agreed that the claimed invention was obvious.